How do patent examiners evaluate reasonable expectation of success in obviousness rejections?
Patent examiners evaluate reasonable expectation of success in obviousness rejections by considering various factors outlined in MPEP 2143.02. The evaluation process involves assessing the prior art, the nature of the problem to be solved, and the knowledge of a person of ordinary skill in the art (POSA).
Key points in the examiner’s evaluation include:
- Prior Art Teachings: Examiners consider the specificity and relevance of prior art teachings to the claimed invention.
- Predictability of the Art: The level of predictability in the relevant field is taken into account.
- Scope of the Claims: The breadth of the claims is considered in relation to the prior art teachings.
- Nature of the Invention: The complexity and technological area of the invention are evaluated.
The MPEP provides guidance on the standard for reasonable expectation of success:
“Obviousness does not require absolute predictability, however, at least some degree of predictability is required.”
Examiners must provide a rationale for why a POSA would have had a reasonable expectation of success. This rationale should be based on evidence from the prior art, common knowledge in the field, and logical reasoning. If an applicant provides evidence of unexpected results or teaching away in the prior art, examiners must consider this in their evaluation of reasonable expectation of success.
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